Cancellation of Progressive’s Business Method Patents Confirmed on Appeal

This case stems from a set of seven overlapping post-grant-review proceedings (CBM PGR) before the Patent Trial and Appeal Board (PTAB) that Liberty Mutual filed against Progressive’s “business method” patents. The patents relate to auto-insurance pricing based upon customer vehicle use patterns – such as the number of sudden stops over a given period of time – as well as online insurance policy adjustments. See U.S. Patent No. 8,140,358 as an example.

In the Covered-Business-Method Review, the PTAB found a number of Progressive’s claims invalid as either anticipated or obvious. On appeal, the Federal Circuit affirms in all respects.

Two different proceedings for the same patent: Liberty Mutual filed two different CBM proceedings against the ‘358 patent. In one, the Board invalidated all claims except for 1, 19, and 20 while in the other the second the Board invalidated all claims of the patent. These two decisions were released about 1-hour apart.

The first challenge on appeal was that the second judgment was improper because – according to Progressive’s theory – the Board lost jurisdiction once it issued the first decision. That theory stems from Section 325(e)(1) that prohibits a petitioner from “maintain[ing] a proceeding before the Office” on issues that “reasonably could have” been raised during a post-grant review that has already reached a final written decision. The argument here is that, once the PTO reached the first final judgment that the second case should immediately disappear. On appeal, the Federal Circuit rejected that approach finding (1) that the statute does not prevent the PTO from maintaining the proceeding and in any event (2) the PTAB indicated that the two decisions were “concurrent” even though actually made public about 1-hour apart. Finally, the Court noted that the PTO has statutory authority to decide how to deal with multiple related proceedings.

Written Description and Claiming Priority: On the merits, a substantial amount of the problem here dealt with patent families and the difficulty in understanding whether a later claim can properly claim priority to an earlier filed application. The PTO typically (except in Hyatt’s case) does not require a patentee to expressly connect each patent claim with its effective priority date. As a result, those arguments are typically saved until later in litigation (thus, the benefit of filing a CIP . . . )

Here, the claims in question included an interface module that produce a “driver safety score” – construed by the PTAB to mean a “calculated insurance risk value associated with driver safety.” The priority application disclosed “rating factors” that might include safety factors, but did not expressly disclose a risk value associated only with driver safety. (Note the seeming subtle shift in construction by the Federal Circuit). In any event, the ruling is that the priority application disclosed the genus but not the later claimed species – as such it does not meet the written description requirement. In this situation, the result is that the priority filing date for the particular patent at issue here is pushed back to the later filing and that date was predated by the intervening prior art disclosures.

= = = =

It does not appear that Section 101 was raised as a challenge:

1. A system that monitors and facilitates a review of data collected from a vehicle that is used to determine a level of safety or cost of insurance comprising:

a processor that collects vehicle data from a vehicle bus that represents aspects of operating the vehicle;

a memory that stores selected vehicle data related to a level of safety or an insurable risk in operating a vehicle;

a wireless transmitter configured to transfer the selected vehicle data retained within the memory to a distributed network and a server;

a database operatively linked to the server to store the selected vehicle data transmitted by the wireless transmitter, the database comprising a storage system remote from the wireless transmitter and the memory comprising records with operations for searching the records and other functions;

where the server is configured to process selected vehicle data that represents one or more aspects of operating the vehicle with data that reflects how the selected vehicle data affects a premium of an insurance policy, safety or level of risk; and

where the server is further configured to generate a rating factor based on the selected vehicle data stored in the database.

[…] Cancellation of Progressive’s Business Method Patents Confirmed on Appeal – The patents relate to auto-insurance pricing based upon customer vehicle use patterns – such as the number of sudden stops over a given period of time – as well as online insurance policy adjustments. See U.S. Patent No. 8,140,358 as an example. […]

[…] Cancellation of Progressive’s Business Method Patents Confirmed on Appeal – The patents relate to auto-insurance pricing based upon customer vehicle use patterns – such as the number of sudden stops over a given period of time – as well as online insurance policy adjustments. See U.S. Patent No. 8,140,358 as an example. […]

[…] Cancellation of Progressive’s Business Method Patents Confirmed on Appeal – The patents relate to auto-insurance pricing based upon customer … the Board invalidated all claims of the patent. These two decisions were released about 1-hour apart. The first challenge on appeal was that the second judgment was improper because … […]

Do you think a machine that rats you out to your insurance company every time you stomp on the gas, stomp on the brakes, or crank the Black Sabbath was invented earlier by someone other than the inventors in these patents?

Because “insurance company” is the kind of limitation that the patent system should treat with the utmost respect.

Meet Les. He was born yesterday. Everytime Les communicates something new over the phone, he invents a new phone. In his own mind, anyway. He’s a very serious person.

[…] Cancellation of Progressive’s Business Method Patents Confirmed on Appeal – The patents relate to auto-insurance pricing based upon customer vehicle use patterns – such as the number of sudden stops over a given period of time – as well as online insurance policy adjustments. See U.S. Patent No. 8,140,358 as an example. […]

Do you think a machine that rats you out to your insurance company every time you stomp on the gas, stomp on the brakes, or crank the Black Sabbath was invented earlier by someone other than the inventors in these patents?

“But I am asking you why you did that since you claimed to have defined fuselage in the spec.”

I did it to move the conversation forward. Whether claims are to be interpreted as one of ordinary skill in the art would understand them given what ever enlightenment is provided by the specification or not, is not the issue I was discussing.

[…] Cancellation of Progressive’s Business Method Patents Confirmed on Appeal – The patents relate to auto-insurance pricing based upon customer vehicle use patterns – such as the number of sudden stops over a given period of time – as well as online insurance policy adjustments. See U.S. Patent No. 8,140,358 as an example. […]

You’re trying to convey in five or six words something that takes multiple lines to properly describe. Now it’s true that you can write that structure into the spec and then call the spec with a word in the claims, but you’re going to need multiple lines of description here. You can’t adequately convey the nuance of the form you need to claim with just a few words.

Fuselage is defined in the spec. I’m allowed to be my own lexicographer.

Of course you are, but either you’re conveying a particular structure or you aren’t. You could call it a widget and if widget is given a particular structure in your spec then that’s okay too. But you can’t avoid description and scope requirements by getting cutesy with language.

wood configured as framing of a main body

No, that’s still not a structure. If nobody has invented an airplane before you can’t describe your airplane as “any wooden body that would be enabled to get off the ground.” The whole point of the first flight was that prior to the flight nobody knew the body structure that would work, and after the first flight we knew of ONE body structure that would work. The only thing that can be claimed is that ONE structure, with particularity. You cannot invent ONE structure that works and then claim ALL structures that will eventually be found to work. You can only claim YOUR STRUCTURE.

Not often. Less dangerous CIP scenarios [especially now that the AIA applies] are filing the CIP within one year of the parent filing date, and definitely before the parent publication date, and preferably abandoning the parent application before it can be published after the CIP has been filed with its priority claim to the parent. At least one claim in the CIP must be fully supported in the parent specification for it to even be a valid CIP oath. [This is not a complete list.]

Fuselage is defined in the spec. I’m allowed to be my own lexicographer.

But ok, how about this:

A flying machine comprising:

wood configured as framing of a main body of the flying machine and as a wing support extending from and supported by left and right sides of the main body; and
canvas configured as sheets pulled tight over at least the wing support and attached by attachment components.

There is a thing called jurisdiction stripping though, and patent appeals are NOT something that must be heard in the Supreme Court – maybe you heard of this thing called the Constitution that gives such discretion to Congress to control such type of appeals…

Well, Random, if the Director sets the rules, you have to follow them even though they are wrong in principle. It is important to get the applicant on record for his or her support in the CIP parent, or 119 priority case.

Sidenote – I don’t think the burden is on him to show priority matches even at the office stage. Priority is a collateral issue of the prior art rejection and the burden of the prior art rejection is on me. I make a rejection, he makes the argument that my reference isn’t prior art to his priority date and the burden is on me to show that it is proper prior art.

Thus, one examines without reference to the priority claim in the case of CIPs, or 119 priority. If the applicant then wants to rely on the priority claim, and he proves entitlement, this generally will require a another search and force an RCE.

That’s precisely the opposite of the rule. If I make a rejection that is within his priority claim and he perfects his priority I am forced to do a second non-final. I can only make new rejections in response to claim amendments or an IDS submission. That is not an amendment. See somewhere in MPEP 706. 706.07 or .08.

The only time I can get around that is if the submission is during the after final stage, because I can always not enter documents after final. But prior to that I have to enter them and I can’t modify the rejection, so I either advance a rejection that will lose on appeal, or I allow, or I do a second non-final. All of those are untenable, which means I don’t put myself in that situation to begin with.

They seem to assume priority and move on. But the proper procedure is to cite art before the application’s filing date and force the applicant to demonstrate priority in CIP and 119 parents in order to effectively to “swear behind” the reference.

Nobody is going to write up a non-final just so he can get a free second non-final. We don’t just throw away working days for the fun of it.

[…] Cancellation of Progressive’s Business Method Patents Confirmed on Appeal – The patents relate to auto-insurance pricing based upon customer vehicle use patterns – such as the number of sudden stops over a given period of time – as well as online insurance policy adjustments. See U.S. Patent No. 8,140,358 as an example. […]

In addition to the definitions in §42.2, the following definitions apply to proceedings under this subpart D:

(a) Covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

(b) Technological invention. In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.

Technological: of, or relating to, or using a machine, a manufacture, or composition of matter.

Technological invention: a new or improved machine, manufacture or composition; a new or improved method of making a machine, manufacture or composition; or a new or improved method of using a machine, manufacture or composition to produce a new or improved physical result.

Abstract: not technological; or an idea involving technology, but with no specific implementation.

Yeah, and the PTO simply boots on technological when the answer sits there right in front of their faces. The statute itself.

But, noooooo. IBM has long been against applying 101 the way it is written. So we come up with another nonce word that IBM wants to use like a nose of wax to suit their needs as a business — twisting it this way for their own patents, and that when they are accused of infringement.

If we are to define technological, we can only define it to be withing the four corners of 101.

“the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.”

The system of claim 1 is designed to solve the same business problem as the method claims ( “A system that monitors and facilitates a review of data collected from a vehicle that is used to determine a level of safety or cost of insurance comprising:” ). The claim also recites a variety of only generic structural components (i.e. processor, database, transmitter). The solution to the problem is in the data processing and communication limitations that are the subject of the method.

I read the “technological features” of the claim as: obtaining data from the vehicle bus; sending it wirelessly to a server for processing; processing selected data with other data; and labeling data based on its content. I don’t see any of that separately or taken as a whole as “novel and unobvious over the prior art”.

I think it is absolutely fair to say this case fits the definition of CBM according to the rule a lot more closely than it fits the “technological invention” exception.

Side note – This is a pretty trashy abstract idea. “I claim measuring measurable things, storing it remotely, and ‘processing’ it to determine a level of risk”

As I’ve said before, when you’re using the phrases “analyze” or “determine” in computers without a limitation as to how its done, you’re in trouble from a 101 standpoint kids. What’s our term du jour? “configured to process.” The only thing that is an invention is a particular method of calculating. When you only claim using data as part of coming to a conclusion, it’s just an abstract idea that relates the data to some result.

So a machine that does your job is an abstract idea. Sure in the spirit world where J. Stevens mind is.

Random: your description of an abstract idea happens to be what everyone does for a living in the information age.

The disconnected cognition keeps marching on…..this nonsense is surely a study in mental illness as the nutjobs continue to build their fantasy world of abstraction. Maybe a book like the Tolkien books should be written about the Abstraction World that the nutjobs live in.

Just freaking weird. You see, “kids”, the problem is that your disconnected cognition falls apart when you meet reality. You know the real world of real machines that perform information processing tasks that take time, energy, and space. You know, reality?

But, I know the nutjobs are marching on. The only way this could have happened is with the SCOTUS being completely ignorant of science and Obama appointing most of the judges on the Fed. Cir. with no science background. Any decent human being with a science background would find that abstract nonsense as an offence against humanity.

In fact, using your brain to “determine” and “analyze” stuff using logic and maths is something even small children and animals do.

It’s fundamental stuff and has no place in a sane patent system. Can anyone make a decent argument why the use of old technology, e.g., a programmable computer and a wireless connection, for their intended purposes should turn ineligible garbage into some wonderful patent-worthy “innovation”?

I haven’t seen one yet. Neither has the Supreme Court. And guess what: they never will.

MM>> In fact, using your brain to “determine” and “analyze” stuff using logic and maths is something even small children and animals do. It’s fundamental stuff and has no place in a sane patent system.

It’s fundamental stuff? Then why is it so hard to create intelligent machines? Got love that one. A new witch word has been generated. “Fundamental stuff.”

>old technology, e.g., a programmable computer and a wireless >connection, for their intended purposes

Programmable computers have been around a long, long time already. Programming them to do things that appear “intelligent” isn’t “hard”. Schoolkids do it and they’ve been doing it since the late 70s (at least — that’s when my nerdy friends and I all went to “computer camp”).

But go ahead and pretend that logic is “hard.” I mean, it might be really hard for you. Check that: I know it’s hard for you.